The lawsuit brought by the owners of Star Trek, CBS and Paramount, against fan film Axanar and its creator Alec Peters has started to heat up once again. Axanar‘s lawyers have filed a Motion to Compel Discovery, which asks CBS and Paramount to produce documents including financial statements, salaries for actors and crew from every Star Trek episode and film ever produced, and statements in support ofAxanar made by Kelvin timeline directors J.J. Abrams and Justin Lin.

Axanar’s attorneys sparred with CBS and Paramount Pictures’ counsel over documents relating to Star Trek fan fiction, and 50 years of financial and copyright ownership records, asking federal Judge R. Gary Klausner to force the studios to produce relevant witnesses and evidence. CBS and Paramount have returned fire saying that the motion filed by Axanar‘s attorneys is “self-serving and deliberately misleading,” and have characterized it as an “unnecessary and an unfortunate waste of the Court’s time.”

In a 62-page joint filing September 29, 2016, the two sides asked for an October 21 hearing before Klausner to make arguments.

Evidence for the Defense

Axanar‘s defense attorney has requested documents from CBS and Paramount that she hopes will bolster their defense, including contentions that:

• Producer Alec Peters’ “20-minute mockumentary fan film [Prelude to Axanar] that was distributed, free of charge, on the Internet,” and the “non-commercial” feature, Axanar, posed no financial threat to CBS and Paramount.
• CBS and Paramount have “long tolerated and encouraged … Star Trek-inspired works of fan fiction.”
• The studios’ “tacit acknowledgement that works of fan fiction such as theAxanar Works have no negative impact” on Star Trek’s market.
• The lack of market harm would be an integral part of the fair use defenseAxanar planned in the case.
• Little or no need for statutory damages from whatever copyright infringement the plaintiffs might prove.
• The 50-year chain of title for Star Trek’s copyrights may have broken links imperiling the studios’ standing to bring suit.

Testimony and Records Sought

Axanar’s defense attorney Erin Ranahan outlined the defense effort to obtain information about:

• Finances from all Star Trek copyrighted works going back 50 years, including five television series and 12 movies
• Salaries Documents demonstrating how much the studios paid “every actor, director, and producer for every single Star Trek movie and television show.”
• J.J. Abrams and Justin Lin Documents relating to Star Trek producer J.J. Abrams’ and director Justin Lin’s statements supporting Axanar
• Fan Fiction Policies Documents and testimony about the studios’ attitudes and policies regarding fan fiction, including cease and desist letters (C&Ds) and takedown notices to websites found to be hosting infringing material.

“Self-serving and deliberately misleading”

The lawyers representing studios CBS and Paramount have called Axanar’s new motion “self-serving and deliberately misleading,” and have complained that the Defense is seeking documents that “don’t exist”. CBS and Paramount lawyers are asserting that the defense:

• Wanted documents that don’t exist.
• Asked for information and documents plaintiffs had already agreed to produce, or had produced two days before the motion was filed, yet still included in this motion.
• Failed to meet with CBS and Paramount attorneys to resolve issues that didn’t need to be included in the motion.
• Made requests, without legal basis, that were “extremely broad, unduly burdensome, and seek documents and information that are neither relevant to any party’s claims or defenses, nor proportional to the case.” They specifically referred to 50 years of CBS and Paramount’s financial and copyright ownership records.
• Harrassed plaintiffs by seeking records about Abrams and Lin’s public statements, which occurred after the lawsuit was filed, therefore having no bearing on the infringement alleged prior to the suit.
• Wanted “irrelevant” records, such as those relating to other Star Trek fan films, or whether the studios had pursued legal action against any other infringers.

The Role of Financial Records

Much of the defense motion revolved around Axanar’s request for the studios’ financial records, which Axanar’s attorney insisted were central to her case’s fair use defense, an important part of which is measuring what market harm was posed by the alleged infringement. And, in the event the studios could make their case, the defense claimed any damages should be minimal since a fan film given away for free could not have done much damage to “two huge corporations.”

Plaintiffs’ Refusal

Ranahan, of Winston & Strawn, complained her counterparts at Loeb & Loeb, the plaintiffs’ attorneys, “have refused to produce sufficient documents responsive to those RFPs [requests for production of documents] and Interrogatories.”³⁾

Loeb’s refusals, Ranahan said, asserted “unfounded and unavailing boilerplate objections,” or simply resulted in no documents being produced.

Moreover, the trade secrets, private and proprietary information, would remain confidential under the protective order already issued by the judge, Ranahan said, so there was no reason to refuse to turn it over.

Axanar’s ‘Not a Fan Film’

Much of the plaintiffs’ response to the motion was based on a firm assertion that Axanar is not a fan production at all — in Peters’ own words:

Defendants acknowledged, while they were engaging in their pre-litigation activities, that they were knowingly infringing Plaintiffs’ copyrights. Defendants also repeatedly pronounced that they were creating a “professional” and “independent” Star Trek film, starring actors (that were paid for their services) that have portrayed roles on Star Trek television series, and produced with professional crew members. Indeed, in spite of defense counsel’s recent statements to the contrary, prior to the filing of this suit, Defendant Peters and his colleagues expressly stated that they were not creating a “fan film.” This case is about a commercial enterprise designed to take money from Star Trek fans, which funds were used to pay Defendant Peters along with his friends and colleagues, to create, as Defendants describe it, “an independent Star Trek film.”⁵⁾

The plaintiffs go on to quote many instances where Peters publicly and explicitly disavowed Axanar‘s status as a fan film and instead described it as a professional production.

Commercial Endeavor

CBS and Paramount attorneys also pointed to “the commercial nature of [Axanar’s] endeavor, specifically calling out its:

• Use of “donations to build out a ‘studio’ that is being rented out for other non-Star Trek projects.”
• Accepting donations that resulted in providing perks that included infringing Star Trek-branded merchandise.
• Paying “Peters himself and his girlfriend tens of thousands of dollars, and used the funds obtained from Star Trek fans’ donations on travel expenses, tires, car insurance, and gas.”⁶⁾

Gene Roddenberry

The defense asserted throughout its motion that Star Trek creator Gene Roddenberry had originally owned the copyright. By all accounts, Roddenberry never possessed the copyright; he created Star Trek as a work-for-hire under Desilu Productions, and then for Paramount. Indeed, the plaintiffs observed, “Ms. Ranahan does not explain what basis she has for assuming that Gene Rodenberry ever owned the rights to Star Trek.”⁸⁾

Another View of Market Harm

The defense spent a great deal of time describing the many and varied ways it wanted to assess whether Axanar had or would cause any harm to the market for Star Trek. The plaintiffs, however, pointed out that financial records aren’t the only way to assess harm:

To the extent that Defendants are asserting that this [financial] information is relevant to the market harm element of the fair use analysis, this is not an accurate statement of law. As the Supreme Court held in Harper & Row, Publrs. v. Nation Enters. … for the plaintiff to negate the element of market harm, it “need[s to] only show that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work…This inquiry must take account not only of harm to the original but also of harm to the market for derivative works.”⁹⁾

In other words, CBS and Paramount maintain that if “professional, commercial ventures” like Axanar were permitted to create Star Trek works, the widespread use by other “fan” productions would damage copyright holders’ “potential market for derivative works.”¹⁰⁾

Interestingly, the case cited for potential harm to future derivative works was a 1998 case won by Jonathan Zavin, Loeb’s lead attorney for the plaintiffs.

Personal Profits

The plaintiffs tried to turn the tables on the defense, questioning how the defense could use “the financial performance of hundreds of [the studios’] works over the course of the last decade to demonstrate that they are not liable for copyright infringement.”¹¹⁾ Instead, the studios attorneys wrote:

It is Defendants’ expenditures that are relevant here, not Plaintiffs’.Defendants’ documents show that they have spent tens of thousands of dollars, raised from Star Trek fans, on personal expenses and salaries,including car insurance and tires. This is the financial information that is relevant to this case, as well as the profits of Defendants.¹²⁾

Other Fan Films

The defense also asked for documents relating to CBS’ relationship with fan films, especially whether it ever issued takedown notices for Star Trek: Hidden Frontier, Starship Exeter, Bring Back Kirk, Star Trek: New Voyages / Star Trek: Phase II, Star Wreck: In the Pirkinning, Star Trek in Lego, Star Trek: Aurora, Star Trek: Of Gods and Men, Starship Farragut, Star Trek: The Next Animation, Dan Hauser’s Animated Star Trek, Star Trek: Phoenix, Star Trek Continues, Star Trek: Specter, Star Trek II: Retribution, Star Trek III: Redemption, Star Trek: Reunion, Star Trek: Secret Voyage, Star Trek: Dark Horizon, Star Trek: Absolution, Star Trek: Renegades and Star Trek: Horizon.¹³⁾

Copyright Enforcement

Ranahan sought records about how or whether the studios enforced their copyright against other fan productions. CBS and Paramount’s lawyers claimed such documents were shielded by attorney-client privilege.

Takedown Notices

The defense also asked for documents and communications about whether to take down either Prelude to Axanar or the “Vulcan Scene” on YouTube. (Ironically, Axanar removed the Vulcan Scene from public view after the lawsuit, and issued its own takedown notices against copies posted on YouTube and Facebook.)

Selective Enforcement

The plaintiffs attempted to forego Axanar’s appeal to how other fan films have been treated by the studios, singling out only Axanar for legal action. Again, citing Zavin’s earlier case:

Failure to pursue third-party infringers has regularly been rejected as a defense to copyright infringement or as an indication of abandonment. … A self-avowed substitute for other Paramount licensed products adversely impacts the market for derivative works.¹⁴⁾

Star Wars Fan Films

Curiously, the motion includes a request related to Star Wars fan productions, fan film guidelines used by Lucasfilm, and any communications between studio personnel and Lucasfilm employees. The plaintiffs argued this request was overly broad and irrelevant, particularly since Axanar is not a fan film.¹⁵⁾

Last month, after receiving a lawsuit from Paramount and CBS for allegedly infringing on “innumerable copyrighted elements of Star Trek,” the team behindStar Trek fan film Axanar responded by demanding that Paramount specify which elements were being infringed on. The idea was that Paramount’s lawyers would have a hard time untangling the web of Star Trek mythology that has been spread out across decades of movies, TV shows, and comic books, so they’d be unable to actually define—let alone copyright—the entire Star Trek universe. However, like the biggest nerd in the comic book store, Paramount has responded to this challenge by pushing up its glasses, clearing its throat, and rattling off a list ofStar Trek facts that would make Wil Wheaton himself shake with fear.

According to The Hollywood Reporter, CBS and Paramount have now amended the original lawsuit with an absolutely vicious 28 pages of copyrighted items that theAxanar team have taken from Stark Trek, ranging from minor things like United Federation Of Planets logos all the way to the general “mood and theme” of your average Star Trek story. Other highlights include every costume ever, specific Stardates that have significance in the Star Trek universe, a Vulcan’s pointy ears, and even generic-ish sci-fi things like phasers, warp drives, and the idea of “beaming up.” One particularly noteworthy entry is the Klingon language itself, which THR notes has been involved in copyright disputes in the past.

The most brutal part of CBS and Paramount’s amendment comes from the Axanarteam itself, though. Apparently, in an interview back in February, Axanarproducer Alec Peters said that his film “[violates] CBS copyright less than any other fan film,” which the lawyers argue might as well be an admission of guilt. Basically, CBS and Paramount have called the Axanar team’s bluff in the most epic/obsessively dorky way possible. But really, for a lawsuit that relies on Star Trek lore as much as this one, is there really any other way to do it?

You can read the full amended lawsuit here.